Published by LawTechie - July 9, 2012 - LawTechie

Intellectual PropertyThe Southern District of New York recently ruled on a trademark dispute between two far off restaurants, concluding that New York’s Second Avenue Deli can continue to serve its trademark “Instant Heart Attack Sandwich.” Lebewohl et al v. Heart Attack Grill LLC et al, 11-cv-3153 (SDNY, July 6, 2012).

This is an interesting trademark dispute for several reasons:

  • A Nevada-based restaurant attempted to stop a New York-based deli from using a potentially similar mark yet neither party has or seemingly intends to do business in the other’s state.
  • The Court concludes that restaurants and deli are sufficiently different that a consumer can tell the difference (we do not often see courts giving consumers such props for their intelligence).
  • The Court grants concurrent use.
  • The Court notes that this case only came about because defendant sent plaintiff an overly aggressive cease and desist letter (thus overlawyering rears its ugly head and loses the client some of its rights).

Second Avenue Deli was threatened by Heart Attack Grill (“HAG”) over its use of the Instant Heart Attack Sandwich and Triple Bypass Sandwich marks. The Deli rightly decided to fight the Nevada’s restaurant’s over-assertion of its rights and sued in the Southern District of NY for a declaratory judgment that the marks are non-infringing.

On the likelihood of confusion issue, the Court aptly finds that delis are not restaurants:

Furthermore, there are other differences that separate the marks. HAG and the Deli pitch for vastly different customers. HAG proudly represents (even in its court papers) that its food is unhealthful. It even draws attention to the fact of a customer who had a heart attack while on the premises. Its food is served by scantily clad waitresses dressed like nurses, as part of its overall “medical”—perhaps better cast as “paramedic”—theme. The Deli, by contrast, is a kosher deli which serves kosher food in the style of a traditional Manhattan deli. Its offerings, other than the Instant Heart Attack Sandwich, do not trumpet their unhealthfulness; and its marketing does not remotely resemble that of HAG’s. Further, being a kosher deli, the Deli could not serve sandwiches containing both meat and cheese. This factor thus strongly favors a finding of no confusion.

Was the Deli smart to bring its case here in NY where the judge is more likely to have experience with kosher delis? Having seen similar common-sense cases go the wrong way in other parts of the country, I think so.

Indeed the Court seems to channel the average NY consumer and its obvious sophistication with regard to restaurants and delis:

Although the record does not permit the Court to assess the sophistication of the patrons of the Deli and HAG, it is safe to say that even an unsophisticated customer could readily differentiate between a Manhattan kosher deli and its latke-based sandwich and a Las Vegas “medically themed” restaurant that features gluttonous cheeseburgers. Such a customer also presumably can differentiate between a restaurant bearing a “heart attack” name and a sandwich with a similar name.

To play devil’s advocate, I am not so sure that an average middle-America consumer would exhibit the same level of sophistication with regard to themed restaurants and delis (maybe I am just being NY-centric, in which case I apologize).

Finally, the Court gives a well-deserved rebuke to defendant’s attorneys for stirring the pot in the first place:

Notably, the instant litigation came about not because of an expansion plan by the Deli into those areas. Instead, it arose because HAG sent an aggressive cease-and-desist letter, attempting to curtail any usage by the Deli of its mark, which in turn prompted the Deli to file its lawsuit. Absent an actual case or controversy, the Court declines to rule on the Deli’s claim that its sandwich could permissibly be served throughout the tri-state area without giving rise to confusion with HAG’s mark.

Lots of money in legal fees wasted despite the fact that the two parties are several time zones apart.

LawTechie is a blog focusing on trends in tech and digital media. Areas covered include intellectual property, cyberlaw, venture capital, transactions and litigation as they relate to the emerging sectors. The blog is edited by the firm's partner Tim Bukher with contributions from the firm's experts in their respective areas of law.


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